E-cigarette company’s trade mark appeal vaporised by Court of Session

The case of CCHG Limited t/a Vapourized v Vapouriz Limited is understood to be the first time a Scottish court has heard an appeal of a decision from the UK Intellectual Property Office’s Hearing Officer, under section 76 of the Trade Marks Act 1994.

Lady Wolffe heard that the appeal was brought by CCHG Limited following an application to the Registrar of Trade Marks by Vapouriz Limited to have the appellant’s trade mark declared invalid.

Smokeless cigarette vaporizer pipes

The appellant’s trade mark, which was applied for in December 2014 and registered in March 2015, was for “smokeless cigarette vaporizer pipes” and the device incorporating the stylised words VAPORIZED INHALE THE FREEDOM.

However, the respondent’s trade mark, for identical goods and services incorporating the stylised word VAPOURIZ, was applied for and registered three years earlier.

In his decision, and following contested proceedings, the HO allowed the respondent’s invalidity application after ruling that the appellant’s trade mark was “similar” to the respondent’s trade mark, which was “earlier” and had been registered in relation to identical goods such that there was a “likelihood of confusion” between the competing trade marks, contrary to section 5(2)(b) of the TMA 1994.

CCHG Limited challenged the decision, but a preliminary issue arose as to the nature of the hearing and the scope of the appeal court’s function given the terms of the different court rules north and south of the border.

Rehearing or review

Rule 55.19(1) of the Rules of the Court of Session provides that an appeal to the Court of Session “shall be a rehearing,” while rule 52.11 of the Civil Procedure Rules for England and Wales states that an appeal is by way of a “review”, although it had previously been described as a “rehearing.

However, both counsel and the judge agreed that there was no material difference and that there should not be a difference in approach depending on whereabouts in the UK an appeal was raised.

Lady Wolffe said: “Terminological differences aside, in the context of the TMA 1994, the starting point in England (before the change introduced by CPR rule 52(11)) and in Scotland was the same.

“Rule 55.19(10) of the RCS envisages that additional evidence may be heard, with the leave of the court. The language of ‘rehearing’ must be sufficiently broad to encompass that eventuality.

“But, in the instant case, no additional evidence was led. As noted above, the HO determined the application to him on the basis of the papers.

“For the purpose of this appeal at least, in my view nothing turns on the differences in formulation in the respective procedural rules of the two jurisdictions, providing for a review (in England, under CPR rule 52.11(1)) and a ‘rehearing’ (in Scotland, in terms of rule 55.19(10) of the Rules).

“Given that the TMA 1994 is of UK-wide application, it is desirable that the exercise of the appellate function by this court, if not its procedural rules, accords with that in England.”

Average consumer

The first substantive appeal question for the court were whether the HO erred in his characterisation of the average consumer and the purchasing process by failing to recognise that the average consumer would have been aware of the widespread use of descriptive words such as “vaporised” in relation to e-cigarettes.

The second ground of challenge concerned the HO’s comparison of the trade marks by artificially dissecting the device marks or failing to compare the marks as a whole.

And thirdly, the appellant argued that the HO erred in his assessment of the likelihood of confusion.

However, the appellant’s appeal failed on all three of the grounds of challenge advanced.

In a written opinion, Lady Wolffe said: “Having considered the parties’ arguments, and the cases cited, I am not persuaded that in respect of his assessment of the likelihood of confusion, there is any detectable error in principle on the part of the Hearing Officer. Nor do I find that he was plainly wrong in the conclusion he reached.”